Appeal No. 2001-0754
Application 09/040,276
The examiner further argues that “the prior art has met each
of the claim limitations with the exception of non-
participatory double bond which remains unchanged after the
reaction” (answer, page 6). The examiner, however, has not
provided evidence that one of ordinary skill in the art would
have known that if a double bond were present at the 3-4
position in Büschken’s starting material, the hydrogen
peroxide would react preferentially at the -NH- site rather
than at the double bond. The record indicates that the
examiner relies upon the appellant’s specification for that
knowledge, but the appellant’s specification is not part of
the prior art. Consequently, the record indicates that the
examiner used impermissible hindsight in rejecting the
appellant’s claim 1. See W.L. Gore & Associates v. Garlock,
Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir.
1983), cert. denied, 469 U.S. 851 (1984); In re Rothermel, 276
F.2d 393, 396, 125 USPQ 328, 331 (CCPA 1960).
Although the appellant has provided a dictionary
definition which states that hydrogen peroxide is a strong
oxidizing agent (attachment to brief), the examiner argues
5
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007